67 Unified Response To Rehearing Petition

Case: 16-1813 Document: 67 Page: 1 Filed: 01/05/2018
2016-1813
UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
DRAGON INTELLECTUAL PROPERTY, LLC,

Appellant,
v.
UNIFIED PATENTS, INC.,

Appellee.
Appeal from the United States Patent and Trademark Office, Patent
Trial and Appeal Board, in No. IPR2014-01252.
APPELLEE’S RESPONSE TO THE PETITION

FOR PANEL REHEARING
_____________________________________________________________
Jonathan Stroud Matthew J. Dowd

Unified Patents, Inc. Dowd PLLC
1875 Connecticut Avenue, NW 1717 Pennsylvania Avenue, NW
Floor 10 Suite 1025
Washington, D.C. 20009 Washington, D.C. 20006
jonathan@unifiedpatents.com (202) 573-3853
mjdowd@dowdpllc.com
Counsel for Appellee

CERTIFICATE OF INTEREST
Counsel for Appellee certifies the following:
1. The full name of every party or amicus represented by me is:
Unified Patents Inc.
2. The name of the real party in interest (if the party named in the
caption is not the real party in interest) represented by me is:
Not Applicable
3. All parent corporations and any publicly held companies that own
10 percent or more of the stock of the party or amicus curiae
represented by me are:
Not Applicable
4. The names of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial
court or agency or are expected to appear in this court are:
Dowd PLLC: Matthew J. Dowd
Unified Patents Inc.: Jonathan Stroud
Oblon, McClelland, Maier & Neustadt, LLP: Michael Kiklis,

Christopher Ricciuti, Lisa Mandrusiak, Scott McKeown*,
Thomas Yebernetsky* and Katherine Cappaert* (*no longer
with the firm)
5. The title and number of any case known to counsel to be pending

in this or any other court or agency that will directly affect or be
directly affected by this court’s decision in the pending appeal.
Dragon Intellectual Property, LLC v. Apple Inc., Nos.

2016- 2186, -2453, -2454, -2456, -2459, -2460, -2461, -
2462, -2463, - 2464 (Fed. Cir. decided Nov. 1, 2017) and

Dragon Intellectual Property, LLC v. DISH Network
LLC, Nos. 2016-2468, 2016-2492 (Fed. Cir. decided Nov.
1, 2017) are the companion cases to the present case.
The other cases known to counsel that may be directly

affected by this appeal are: Dragon Intellectual Property,
LLC v. AT&T Services, Inc., C.A. No. 13-2061-RGA;
Dragon Intellectual Property, LLC v. Charter
Communications Inc., C.A. No. 13-2062- RGA; Dragon
Intellectual Property, LLC v. Comcast Cable
Communications LLC, C.A. No. 13-2063-RGA; Dragon
Intellectual Property, LLC v. Cox Communications Inc.,
C.A. No. 13-2064-RGA; Dragon Intellectual Property,
LLC v. DirecTV LLC, C.A. No. 13-2065-RGA; Dragon
Intellectual Property, LLC v. DISH Network LLC, C.A.
No. 13-2066- RGA; Dragon Intellectual Property, LLC v.
Sirius XM Radio Inc., C.A. No. 13-2067-RGA; Dragon
Intellectual Property, LLC v. Time Warner Cable Inc.,
C.A. No. 13-2068-RGA; and Dragon Intellectual
Property, LLC v. Verizon Communications Inc., C.A. No.
13-2069-RGA, all before the United States District Court
for the District of Delaware.
Date: January 5, 2018 /s/ Matthew J. Dowd

Signature of counsel
Matthew J. Dowd
Printed name of counsel
- ii -
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .............................................................. v
INTRODUCTION ..............................................................................1
REASONS FOR DENYING THE PETITION ..................................2
I. Vacatur Is Not Required Here .................................................2
A. Vacatur is an Equitable Remedy That is Not Applied

Automatically ..................................................................2
B. The Federal Circuit Has Not Established a Default

Requirement of Vacatur in Appeals from the Board .....4
C. The Public Interest Counsels Against Vacatur .............5
D. The Present Appeal is Similar to Affirmance on One of

Several Grounds Without Vacatur of the Underlying
Decision ............................................................................7
II. The Petition Does Not Consider The Public Nature Of The
Patent Right, Which Further Warrants Denial Of The
Request To Vacate ..................................................................10
A. Dragon IP’s Dispute Lies With the Patent Office, Not

With Unified Patents ....................................................10
B. The Public Interest Doctrine Favors the Preservation

of the Board’s Decision ..................................................12
III. Preferable Alternatives To Vacatur Exist, In The Event That

Dragon IP Files A Cert Petition And The Supreme Court
Reverses Retroactively In Oil States .....................................13
IV. Conclusion ...............................................................................16
CERTIFICATE OF COMPLIANCE
- iii -
CERTIFICATE OF SERVICE
- iv -
TABLE OF AUTHORITIES
Page(s)
Cases
A. L. Mechling Barge Lines, Inc. v. United States,

368 U.S. 324 (1961) ................................................................................ 3
Already, LLC v. Nike, Inc.,

133 S. Ct. 721 (2013) .............................................................................. 2
Arizonans for Official English v. Arizona,

520 U.S. 43 (1997) .................................................................................. 2
Aqua Marine Supply v. AIM Machining, Inc.,

247 F.3d 1216 (Fed. Cir. 2001) .............................................................. 1
Blonder-Tongue Laboratories, Inc. v.

University of Illinois Foundation,
402 U.S. 313 (1971) ................................................................................ 7
Calderon v. Thompson,
523 U.S. 538 (1998) .............................................................................. 15
Caraco Pharmaceutical Laboratories, Ltd. v.

Forest Laboratories, Inc.,
441 F.3d 977 (Fed. Cir. 2006) .......................................................... 2, 10
Cardinal Chemical Co. v. Morton International, Inc.,

508 U.S. 83 (1993) .................................................................................. 6
Greater Boston Television Corp. v. FCC,

463 F.2d 268 (D.C. Cir. 1971) .............................................................. 15
In re Donaldson Co.,
981 F.2d 1236 (Fed. Cir. 1992) ............................................................ 15
In re TLI Communications LLC Patent Litigation,

823 F.3d 607 (Fed. Cir. 2016) ................................................................ 7
-v-
Intellectual Ventures II LLC v. Commerce Bancshares, Inc.,

682 Fed. App’x 891 (Fed. Cir. 2017) ...................................................... 4
International Securities Exchange, LLC v.

Chicago Board Options Exchange, Inc.,
643 Fed. App’x 966 (Fed. Cir. 2016) ...................................................... 5
Knowles Electronics LLC v. Matal,

No. 2016-1954 (Fed. Cir. filed May 2, 2016) ....................................... 11
Lear, Inc. v. Adkins,

395 U.S. 653 (1969) ................................................................................ 7
Ohio Willow Wood Co. v. Thermo-Ply, Inc.,

629 F.3d 1374 (Fed. Cir. 2011) .............................................................. 6
Phonometrics, Inc. v. N. Telecom Inc.,

133 F.3d 1459 (Fed. Cir. 1998) .............................................................. 6
PPG Indus., Inc. v. Valspar Sourcing, Inc.,

679 Fed. App’x 1002 (Fed. Cir. 2017) .................................................... 5
Prolitec, Inc. v. ScentAir Technologies, Inc.,

807 F.3d 1353 (Fed. Cir. 2015) .............................................................. 8
Securus Technologies, Inc. v. Global Tel*Link Corp.,

685 Fed. App’x 979 (Fed. Cir. 2017) ...................................................... 4
Southern Pacific Terminal Co. v. ICC,

219 U.S. 498 (1911) ........................................................................ 12, 13
United States v. Munsingwear, Inc.,

340 U.S. 36 (1950) ...................................................................... 1, 2, 3, 9
United States Parole Commission v. Geraghty,

445 U.S. 388 (1980) .............................................................................. 10
U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership,

513 U.S. 18 (1994) ...................................................................... 2, 3, 5, 9
Uship Intellectual Properties, LLC v. United States,

714 F.3d 1311 (Fed. Cir. 2013) .............................................................. 8
- vi -
Statutes
35 U.S.C. § 325(d) ....................................................................................... 9
Other Authorities
Michael T. Renaud, et al., Supreme Court Hears Oral Arguments in Oil

States Regarding Constitutional Challenge to Inter Partes Review,
National Law Review (Dec. 8, 2017) ................................................... 14
- vii -
INTRODUCTION
The petition for panel rehearing should be denied. First, the panel
did not overlook any point of law or fact, and “[t]here are no exceptional
circumstances here that would support departure from the general rule
against vacatur.” Aqua Marine Supply v. AIM Machining, Inc., 247 F. 3d
1216, 1221 (Fed. Cir. 2001). The rehearing petition incorrectly argues
that vacatur is an “established practice” in the present circumstances.
Second, the public interest strongly warrants against vacatur, even
viewing the case as moot. The Supreme Court emphasized the
importance of the public interest when applying Munsingwear,
something Dragon IP’s petition does not address.
Third, Dragon IP’s petition for panel rehearing depends on two
necessary contingencies that may never occur: The filing of Dragon IP’s
certiorari petition and the Supreme Court holding past IPR processes to
be unconstitutional. Both events are speculative. More importantly,
Dragon IP’s petition overlooks at least three other alternatives to
vacatur, each of which is preferable, and each of which is consonant with
the public interest in not erasing nunc pro tunc a considered patentability
determination from the public record.
-1-
REASONS FOR DENYING THE PETITION
I. Vacatur Is Not Required Here
A. Vacatur is an Equitable Remedy That is Not Applied

Automatically
Under Article III, federal courts are limited to adjudicating
disputes involving an actual ongoing case or controversy. Already, LLC
v. Nike, Inc., 133 S. Ct. 721, 726 (2013). Thus mootness may strip an
Article III court of jurisdiction. Caraco Pharm. Labs., Ltd. v. Forest
Labs., Inc., 527 F.3d 1278, 1296 (Fed. Cir. 2008).
When a case later becomes moot during appeal, the underlying
judgment may sometimes be vacated. See United States v.
Munsingwear, Inc., 340 U.S. 36 (1950); Arizonans for Official English v.
Arizona, 520 U.S. 43, 71–72 (1997) (“Vacatur clears the path for future
relitigation by eliminating a judgment the loser was stopped from
opposing on direct review.” (quotation omitted)).
Even so, courts limit when lower judicial determinations can be
erased from the controlling body of case law. “[J]udicial precedents are
presumptively correct and valuable to the legal community as a whole . . .
not merely the property of private litigants.” U.S. Bancorp Mortgage Co.
v. Bonner Mall P’ship, 513 U.S. 18, 26 (1994). For this reason, the Court
-2-
noted that a losing party can surrender a “claim to the equitable remedy
of vacatur” by voluntarily forfeiting “the ordinary processes of appeal or
certiorari.” Id. at 25.
Dragon IP’s petition misreads the controlling law on vacatur by
suggesting that, under Munsingwear, vacatur is automatic based on a
purported “established practice.” See Dragon IP Pet. at 1. The Supreme
Court in U.S. Bancorp explained that “the portion of Justice Douglas’
opinion in Munsingwear describing the ‘established practice’ for vacatur
was dictum” and that, “as Munsingwear itself acknowledged, the
‘established practice’ (in addition to being unconsidered) was not entirely
uniform.” U.S. Bancorp, 513 U.S. at 23 (citation omitted); see also id. at
24 (“This seems to us a prime occasion for invoking our customary refusal
to be bound by dicta . . . .”).
Dragon IP’s petition also overlooks that the mootness doctrine does
not apply to Patent Trial and Appeal Board (“Board”) proceedings. While
the Supreme Court has on occasion applied vacatur to administrative
orders, see A. L. Mechling Barge Lines, Inc. v. United States, 368 U.S.
324, 329 (1961), important distinctions exist between vacating an
underlying decision of an Article III court and vacating a final Board
-3-
decision on patent validity. These differences, as discussed below, are
additional reasons to deny Dragon IP’s petition for rehearing this
Circuit’s considered decision.
B. The Federal Circuit Has Not Established a Default

Requirement of Vacatur in Appeals from the Board
Contrary to the petition’s contention, this Court has not established
any default requirement that vacatur must be applied when an appeal
from the Board is dismissed. A survey of this Court’s decisions reveals
no standard approach.
In several recent cases, the Court has dismissed as moot parallel
appeals from the Board but did not require vacatur. See Intellectual
Ventures II LLC v. Commerce Bancshares, Inc., 682 Fed. App’x 891, 895
(Fed. Cir. 2017) (non-precedential) (dismissing an appeal as moot but not
ordering vacatur of the Board decision); Securus Techs., Inc. v. Global
Tel*Link Corp., 685 Fed. App’x 979, 990 (Fed. Cir. 2017) (non-
precedential) (dismissing as moot certain appeals of claims but not
ordering vacatur); Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 997
(Fed. Cir. 2016) (affirming the Board’s obviousness decision in an IPR
and dismissing as moot the appeal of a CBM of the same patent but not
ordering vacatur).
-4-
To be sure, this Court has also vacated underlying PTO decisions.
See PPG Indus., Inc. v. Valspar Sourcing, Inc., 679 Fed. App’x 1002, 1006
(Fed. Cir. 2017) (non-precedential) (holding appeal moot based on
covenant not to sue and vacating underlying reexamination decisions);
Int’l Securities Exchange, LLC v. Chicago Bd. Options Exchange, Inc.,
643 Fed. App’x 966, 967 (Fed. Cir. 2016) (non-precedential) (dismissing
appeal as moot based on decision in companion appeal and vacating the
Board’s decision).
C. The Public Interest Counsels Against Vacatur
Dragon IP’s petition for panel rehearing also does not account for
the strong public interest that cautions against undoing a PTO
determination that an issued patent was, in fact, improperly issued. This
public interest weighs against vacatur in the present case.
In U.S. Bancorp, the Supreme Court noted that “the extraordinary
remedy of vacatur” is, at its base, an equitable remedy. 513 U.S. at 26.
The Court further explained that, “when federal courts contemplate
equitable relief, our holding must also take account of the public
interest.” Id.
-5-
In patent disputes, the judicial and administrative cancellation of
patents ought to give the public confidence that they will be free from
later accusations of infringing those same patents. See Cardinal
Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83, 100 (1993) (noting “a
strong public interest in the finality of judgments in patent litigation”).
In Cardinal Chemical, the Supreme Court held the public interest to be
“so high that the Federal Circuit must consider a validity determination
on appeal, even if the court concludes that the defendant does not infringe
the patent at issue.” Ohio Willow Wood Co. v. Thermo-Ply, Inc., 629 F.3d
1374, 1376 (Fed. Cir. 2011) (Moore, J., concurring); see also
Phonometrics, Inc. v. N. Telecom Inc., 133 F.3d 1459, 1468 (Fed. Cir.
1998) (holding that Cardinal Chemical prohibits vacating an invalidity
judgment even though the patent was found non-infringed).
Indeed, the Court “commented at length on the wasteful
consequences of relitigating the validity of a patent after it has once been
held invalid in a fair trial, and we noted the danger that the opportunity
to relitigate might, as a practical matter, grant monopoly privileges to
the holders of invalid patents.” Cardinal Chem., 508 U.S. at 100. Along
similar lines, the Supreme Court has recognized that the public interest
-6-
in cancelling invalid patents is strong enough to overcome licensee
estoppel, Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969), and strong
enough to apply non-mutual collateral estoppel, Blonder-Tongue Labs.,
Inc. v. Univ. of Ill. Found., 402 U.S. 313, 349–50 (1971).
These public interest concerns in patent cases pervade patent law
doctrines—from claim construction to the doctrine of equivalents to
subject-matter eligibility. These same concerns apply equally to vacatur,
and the petition for panel rehearing fails to address them.
D. The Present Appeal is Similar to Affirmance on One of

Several Grounds Without Vacatur of the Underlying
Decision
Another reason to deny the petition is because the present case is
similar to a case where this Court affirms patent invalidity on only one
of multiple possible grounds. In such cases, the Court generally does not
order partial vacatur of the underlying decision. The same approach
should apply here.
In many appeals, this Court rules on only one of multiple invalidity
grounds present on appeal as a basis for affirmance. See, e.g., In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 609 (Fed. Cir. 2016)
(affirming invalidity on § 101 grounds but declining to reach § 112 ¶ 6
-7-
grounds); Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353, 1362 (Fed.
Cir. 2015) (“Because we affirm the Board on the anticipation grounds, we
do not reach the Board's determination on the obviousness grounds.”).
The Court has done the same with claim construction arguments. E.g.,
Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1313 n.1
(Fed. Cir. 2013) (“Because construction of ‘validating’ resolves this case,
we need not reach the parties’ arguments with regard to ‘storing.’”). In
these instances, there is no right to a partial vacatur of the underlying
court decision.
Furthermore, adopting Dragon IP’s automatic vacatur approach
would lead to anomalous results that are dependent on procedural
peculiarities specific to AIA practice. Take a hypothetical IPR instituted
against a patent based on two grounds: Lack of novelty and lack of
non-obviousness. The petitioner wins on both issues, and the patent
owner appeals both issues. This Court could affirm on one of the
appealed issues without reaching the second issue. Following the usual
course, the Court would affirm the Board’s judgment and would not order
vacatur of only part of the Board’s decision ruling on the second issue.
-8-
Now, take the same two validity challenges but presented in two
separate IPR proceedings.1 The petitioner wins both IPRs, and the
patent owner again appeals. If the Federal Circuit affirms in one appeal,
the Court has no reason to reach invalidity ground in the second appeal,
but under Dragon IP’s automatic vacatur approach, the Board’s decision
on the second issue would be vacated.
This would create disparate results and potential gamesmanship.
Vacatur in one instance but not the other would be dictated by the format
in which validity challenges are presented to the Board and elevate form
over function.2 Neither Munsingwear nor U.S. Bancorp suggests that
this approach is correct, and Dragon IP’s petition fails to consider these
inconsistent results.
1 Separate grounds for invalidity of the same patent claims are

sometimes necessarily presented in separate IPR petitions because the
page limitations of IPR petitions do not permit a full presentation of the
arguments and evidence in a single petition or by a single party.
2 Multiple parallel petitions are contemplated at length by the statute.
See 35 U.S.C. § 325(d). Furthermore, the Board has the authority to
consolidate multiple proceedings. Id. Thus, whether a Board decision on
unpatentability would be subject to vacatur under Dragon IP’s theory
could be contingent on whether or not the Board, in its discretion,
consolidates separately filed IPRs.
-9-
II. The Petition Does Not Consider The Public Nature Of The Patent
Right, Which Further Warrants Denial Of The Request To Vacate
A. Dragon IP’s Dispute Lies With the Patent Office, Not With
Unified Patents
Traditional mootness concerns stem from Article III’s requirement
that there be a “case” or “controversy” between the litigating parties.
“The mootness doctrine requires that the requisite personal stake that is
required for a party to have standing at the outset of an action must
continue to exist throughout all stages of the action.” Caraco Pharm.
Labs., 527 F.3d at 1296 (citing U.S. Parole Comm’n v. Geraghty, 445 U.S.
388, 397 (1980)).
These traditional mootness concerns apply differently in the unique
context of appeals from the Board. Unlike appeals from the district court,
many appeals from the Board could be technically “moot” during the
entire proceeding if viewed strictly as a mere analogue of district court
litigation. Anyone other than the patent owner may request an IPR, and
the petitioner may not be currently involved in a live dispute with the
patent owner. Thus, many Board challenges would fail the “mootness”
test if thought of as a dispute between petitioner and patent owner.
- 10 -
A more accurate consideration of mootness in this context is to
recognize that the dispute is ultimately between the patent owner and
the PTO. Here, Dragon IP’s controversy is not with anything Unified
Patents has done or will do. Dragon IP’s controversy is with the PTO’s
administrative decision to revoke Dragon IP’s patent.
This view—that the dispute is between the patent owner and the
PTO—is consistent with the PTO’s position advanced in Knowles
Electronics LLC v. Matal, No. 2016-1954 (Fed. Cir. filed May 2, 2016). In
that appeal of an IPR final written decision, the successful patent
challenger declined to participate in the appeal to this Court. This Court
then ordered supplemental briefing on whether the PTO must have
Article III standing to intervene on the side of the appellee. In response,
the PTO contended that “there is a genuine and concrete controversy
between the appellant—a patentee whose claims will be canceled—and
the USPTO, which is the entity that has made the decision that requires
canceling the previously patented claims.” PTO Supplemental Br. at 1.
Recognizing the dispute as between the patent owner and the PTO
highlights the effect PTO decisions have on the public at large. Most
litigation in Article III courts—where standing, mootness, and ripeness
- 11 -
limit jurisdiction to actual controversies—results in judgements and
potential monetary damages that affect only the parties directly involved
in the cases. With IPR decisions by the Board, the outcomes affect
entities beyond those directly involved in the IPR proceeding, and indeed
the public at large. The Board decision in this case may, for example,
provide further guidance to patent examiners and the public about the
scope of patentable inventions, and it may prevent others from being
threatened with or sued for infringement on patent claims found
unpatentable by the agency that issued them.
B. The Public Interest Doctrine Favors the Preservation of the

Board’s Decision
Dragon IP’s petition also does not account for the broad public
interest doctrine that courts, through their inherent discretion, have
invoked to retain jurisdiction over an appeal even where it might be
considered moot. This is yet another reason to decline Dragon IP’s
invitation to vacate the Board’s decision.
The Supreme Court has avoided a finding of mootness in certain
cases that are “capable of repetition, yet evading review.” See Sosna v.
Iowa, 419 U.S. 393, 399–400 (1975); S. Pac. Terminal Co. v. ICC, 219 U.S.
498, 515 (1911). In such cases, the public interest is relevant when
- 12 -
deciding to apply the “capable of repetition, yet evading review” exception
to mootness. S. Pac. Terminal, 219 U.S. at 515.
Unified Patents does not rely on these cases to argue that the
present appeal is not moot. The relevance here is additional evidence
that courts frequently consider the public nature of the dispute in
assessing both mootness and vacatur, and those considerations affect the
contours of their actions. Because the present appeal involves patent
rights that can affect the public, and because Dragon IP has not
considered this issue in seeking vacatur, the Court should deny Dragon
IP’s petition for panel rehearing.
III. Preferable Alternatives To Vacatur Exist, In The Event That

Dragon IP Files A Cert Petition And The Supreme Court Reverses
Retroactively In Oil States
Beyond its automatic vacatur argument, Dragon IP’s petition relies
on a scenario based on multiple speculative contingencies that may never
occur—namely, that it may file a certiorari petition, and that the
Supreme Court may rule IPRs unconstitutional and applying that ruling
retroactively so as to affect the merits ruling here cancelling Dragon IP’s
patent. Given the unlikelihood of these events and the availability of
- 13 -
other options, the Court should not order the Board to undo its
unpatentability determination in this case.
First, Dragon IP states that it “is considering whether to file a
petition for writ of certiorari in” the related DISH Appeal. See Dragon
IP Pet. at 3 n.2 (emphasis added). Dragon IP’s own statement
acknowledges that a certiorari petition might not be filed, which would
render its petition for panel rehearing a mere hypothetical exercise.
Second, even if Dragon IP were to file a certiorari petition, Dragon
IP’s position would still depend on the Supreme Court granting the
petition, holding the IPR process unconstitutional, and applying such a
ruling retroactively to decisions already made. And while admittedly
speculation, much commentary predicts that the AIA post-grant review
procedures will survive the constitutional challenge presented in Oil
States. See, e.g., Michael T. Renaud, et al., Supreme Court Hears Oral
Arguments in Oil States Regarding Constitutional Challenge to Inter
Partes Review, National Law Review (Dec. 8, 2017)3 (“While it is
uncertain how the Court will rule, based on the questions asked by the
3 See https://www.natlawreview.com/article/supreme-court-hears-oral-
arguments-oil-states-regarding-constitutional-challenge-to.
- 14 -
Justices the smart money seems to be on the IPR regime being upheld as
constitutional.”).
Finally, even if all of contingencies occur as Dragon IP hopes,
Dragon IP still has other options to preserve any rights it believes it has.
Dragon IP could file a certiori petition in this case to ensure that it
preserves its right to challenge the Board’s decision. If it does not file a
certiorari petition, Dragon IP could seek a stay of this Court’s mandate.
And if it does neither, Dragon IP could seek to recall this Court’s mandate
at a later date if the contingencies occur.4
Dragon IP’s petition for panel rehearing evinces no consideration of
these alternative approaches. In view of the strong public interest in
cancelling unpatentable patent claims and understanding the PTO’s
reasoning, each of the three options is preferable to erasing an underlying
Board determination and prejudicing the public interest.
4The courts of appeal have the authority to recall a mandate. See, e.g.,
Calderon v. Thompson, 523 U.S. 538, 549–50 (1998) (recognizing that the
courts of appeals “have the inherent power to recall their mandates”);
In re Donaldson Co., 981 F.2d 1236, 1236 (Fed. Cir. 1992) (recalling
mandate and reinstating appeal); Greater Boston Television Corp. v.
FCC, 463 F.2d 268, 278 (D.C. Cir. 1971).
- 15 -
IV. Conclusion
For the foregoing reasons, the petition for panel rehearing should
be denied.
Date: January 5, 2018 Respectfully submitted,
/s/ Matthew J. Dowd
Matthew J. Dowd
Dowd PLLC
1717 Pennsylvania Avenue, NW
Suite 1025
Washington, D.C. 20006
(202) 573-3853
mjdowd@dowdpllc.com
Jonathan Stroud
Unified Patents, Inc.
1875 Connecticut Avenue, NW
Floor 10
jonathan@unifiedpatents.com
- 16 -
CERTIFICATE OF COMPLIANCE
This response complies with the word-length limitation of Federal
Circuit Rule 40(b)(1). This brief contains 2,979 words, excluding the
portions set forth in FRAP 32(f) and Federal Circuit Rule 32(b). This
response complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(a)(5) and the type style requirements of Federal
Rule of Appellate Procedure 32(a)(6). The brief has been prepared in a
proportionally spaced typeface using Microsoft® Word and 14-point
Century type.
/s/ Matthew J. Dowd

Matthew J. Dowd
Dowd PLLC
Suite 1025
(202) 573-3853
mjdowd@dowdpllc.com
Dated: January 5, 2018

CERTIFICATE OF SERVICE
I hereby certify that on this day, January 5, 2018, the foregoing

was electronically filed and therefore served electronically via the
court’s ECF/CM system on all counsel of record.
/s/ Matthew J. Dowd

Matthew J. Dowd
Dowd PLLC
Suite 1025
(202) 573-3853
mjdowd@dowdpllc.com
Dated: January 5, 2018

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Case: 16-1813 Document: 67 Page: 1 Filed: 01/05/2018

UNITED STATES COURT OF APPEALS

DRAGON INTELLECTUAL PROPERTY, LLC,

UNIFIED PATENTS, INC.,

APPELLEE’S RESPONSE TO THE PETITION

Jonathan Stroud Matthew J. Dowd

Counsel for Appellee

Counsel for Appellee certifies the following:

1. The full name of every party or amicus represented by me is:

Unified Patents Inc.

Dowd PLLC: Matthew J. Dowd

Unified Patents Inc.: Jonathan Stroud

Oblon, McClelland, Maier & Neustadt, LLP: Michael Kiklis,

5. The title and number of any case known to counsel to be pending

Dragon Intellectual Property, LLC v. Apple Inc., Nos.

2462, -2463, - 2464 (Fed. Cir. decided Nov. 1, 2017) and

The other cases known to counsel that may be directly

Date: January 5, 2018 /s/ Matthew J. Dowd

TABLE OF AUTHORITIES .............................................................. v

REASONS FOR DENYING THE PETITION ..................................2

I. Vacatur Is Not Required Here .................................................2

A. Vacatur is an Equitable Remedy That is Not Applied

B. The Federal Circuit Has Not Established a Default

C. The Public Interest Counsels Against Vacatur .............5

D. The Present Appeal is Similar to Affirmance on One of

A. Dragon IP’s Dispute Lies With the Patent Office, Not

B. The Public Interest Doctrine Favors the Preservation

III. Preferable Alternatives To Vacatur Exist, In The Event That

IV. Conclusion ...............................................................................16

A. L. Mechling Barge Lines, Inc. v. United States,

Already, LLC v. Nike, Inc.,

Arizonans for Official English v. Arizona,

Aqua Marine Supply v. AIM Machining, Inc.,

Blonder-Tongue Laboratories, Inc. v.

Caraco Pharmaceutical Laboratories, Ltd. v.

Cardinal Chemical Co. v. Morton International, Inc.,

Greater Boston Television Corp. v. FCC,

In re TLI Communications LLC Patent Litigation,

Intellectual Ventures II LLC v. Commerce Bancshares, Inc.,

International Securities Exchange, LLC v.

Knowles Electronics LLC v. Matal,

Lear, Inc. v. Adkins,

Ohio Willow Wood Co. v. Thermo-Ply, Inc.,

Phonometrics, Inc. v. N. Telecom Inc.,

PPG Indus., Inc. v. Valspar Sourcing, Inc.,

Prolitec, Inc. v. ScentAir Technologies, Inc.,

Securus Technologies, Inc. v. Global Tel*Link Corp.,

Southern Pacific Terminal Co. v. ICC,

United States v. Munsingwear, Inc.,

United States Parole Commission v. Geraghty,

U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership,

Uship Intellectual Properties, LLC v. United States,

35 U.S.C. § 325(d) ....................................................................................... 9

Michael T. Renaud, et al., Supreme Court Hears Oral Arguments in Oil

against vacatur.” Aqua Marine Supply v. AIM Machining, Inc., 247 F. 3d

that vacatur is an “established practice” in the present circumstances.

Second, the public interest strongly warrants against vacatur, even

viewing the case as moot. The Supreme Court emphasized the

importance of the public interest when applying Munsingwear,

something Dragon IP’s petition does not address.

Third, Dragon IP’s petition for panel rehearing depends on two

be unconstitutional. Both events are speculative. More importantly,

Dragon IP’s petition overlooks at least three other alternatives to